T 1954/13 - No re-establishment Notice of appeal

Key points

• This case concerns a request for re-establishment for a late-filed Notice of appeal and, more interestingly, the question of the refund of the appeal fee
• The decision was taken on 27.10.2017 but was published only on 03.01.2019. The Board orders the refund of the appeal fee; however, I note that referral G1/18 was not yet pending when the decision was taken. 
• For the RE request, that is refused for lack of due care. The due care discussion is not unusual (a US client issuing a "STOP WORK" order but not explicitly deciding to abandon the case).
• The Board comes to the conclusion that the appeal is deemed to not have been filed and that the appeal fee is reimbursed. 
• The Board in conclusion: "Finally, because the request for re-establishment of rights is rejected and the appeal is deemed not to have been filed, the appeal fee has not fallen due pursuant to Article 4(1) RFees. Thus, the appeal fee was paid without a legal basis and must therefore be reimbursed"  (citing J 21/80, T 1026/06, T585/08).
• As a comment, whether the appeal fee payment was valid or not is quite a puzzle. The Board states first in r.8 that "the omitted acts, i.e. the filing of the notice of appeal and the payment of the appeal fee, were completed in due time". Which seems to imply that the appeal fee was validly paid under Rule 136(2) in order to complete the omitted act.
• However in r. 44 the Board states that "the appeal fee was paid without a legal basis" which to me means that the payment was invalid. Hence, the appeal fee payment is simultaneously valid (under R136(2)) and invalid (under Rfees4 - or at least "without a legal basis").  
• Admittedly, EPO practice appears to be that also in case of a RE request for a missed renewal fee payment (with surcharge) that is refused for lack of due care (hence, the RE request is admissible), the renewal fee with surcharge is refunded (e.g. J13/99, r.11 and the file of T 2106/14 and J23/14).
• Possibly, the Enlarged Board in G1/18 could clarify whether the fee payment is valid or invalid  (e.g. by concluding that the fee payment as omitted act has Rule 136(2) as legal basis), or if the current case law is to be confirmed, at least explicitly acknowledge that the omitted fee is simultaneously validly paid for R136(2) (such that the RE request admissible) and invalidly paid under Rfees4 (so that it is refunded as paid without legal basis). Or perhaps I simply overlook something (comments are welcome!)
• A second point is of course whether in case the RE request refused, the Notice of appeal is deemed to be not filed or inadmissible (which is precisely the question in pending referral G1/18).
• The Board: "Firstly, the appeal is deemed not filed in the present case because no notice of appeal had been filed within the two-month time limit, and the appeal fee had not been paid within that time limit either. The board's construction, that in order for the appeal to be deemed filed not only the notice of appeal must be filed but also the appeal fee must be paid within the two-month time limit of Article 108, first sentence, EPC, is based on the consideration that sentences 1 and 2 of Article 108 EPC are to be read together. [....] Accordingly, the board interprets Article 108, second sentence, EPC as meaning that payment of the appeal fee within the two-month time limit is a further precondition for an appeal being formed."
• As a comment, this reasoning can set the reader on the wrong track by the emphasis in that the wording "not only the notice of appeal must be filed but also the appeal fee must be paid" can suggest that the question was whether the filing of only Notice of appeal is sufficient - the facts of the case are that neither the Notice of appeal was filed nor the appeal fee was paid. The debated issue is whether the sanction is whether the appeal is "deemed not to have been filed" or is inadmissible. Moreover, the Board's phrase "payment of the appeal fee within the two-month time limit is a further precondition for an appeal being formed" uses a kind of a third alternative - does "formed" mean "deemed not to have been filed" or "inadmissible" or something else? (or perhaps the Board is borrowing from the French text of Art. 108 using "n'est réputé formé").
• The Board continues: "This is in line with the general concept of the EPC that a request is only deemed filed [...] if payment is made in due time. Furthermore, [...] (see also T 1325/15, Reasons, point 41)." 
• T 1325/15 stated "Although the position that Rule 101(1) EPC means that a late-filed notice of appeal brings into existence an inadmissible appeal may be not unreasonable, in view of the general rule that no distinction is to be made between the late filing and the non-filing of a document, the Board considers that no appeal exists where a notice of appeal was not (deemed to be) filed in due time."
• As a comment, I think there are two distinct principles at play: firstly, that a request is deemed not to have been filed if no fee is paid and secondly the "general rule" assumed in T1325/15 that "no distinction is to be made between the late filing and the non-filing of a document". For the first, I note that this is irrespective of any time limit, e.g. applies also for a request for limitation under Art.105a(1) EPC. Moreover, it is not a general principle but for each request based on the specific EPC provision, e.g. for a request for an extension of a time limit there is no fee (R132(2)) and (arguably) failure to pay the filing fee does not result in the application being deemed to be not filed but deemed withdrawal (Art.78(2)). For the second principle, this applies e.g. also for documents not involving a fee such as a Statement of grounds. Hence, in my view, these two rules are distinct from each other.
• As to T1325/15's "general rule that no distinction is to be made between the late filing and the non-filing of a document " : there is no explicit legal basis in any provision of the EPC and I am also not aware of any Enlarged Board decision stating this; so the legal basis for this asserted  "general rule" is not readily apparent to me.  At least under Dutch national law, no such general rule exist (as far as I know) and a late-filed Notice of appeal is inadmissible without refund of the appeal fee (e.g. ECLI:NL:GHDHA:2016:4284 about a late-filed filed appeal in patent litigation without any order for refund). 
• As indicated in the amicus brief of Mr. Pavon Mayo in G1/18 "It has been argued that an additional general rule exists that late payment and non-payment should be treated the same way. [] German patent law influences decisions and practice in the EPO.  [] Not surprisingly, the German patent law (PatkostG § 6) provides for explicit provision stating that there is no distinction between late payment and nonpayment and in both cases it renders the action (Handlung) not made (nicht vorgenommen)". 
• However, in my view, the national law of one Contracting State seems a rather weak basis for accepting it as a "principle of procedural law generally recognized in the Contracting States" under Article 125 EPC (and as said, e.g. Dutch civil procedural law appears to have a different rule). 
• Finally, under German law, the relevant case appears to be 12 W (pat) 60/14 (link); on p.5 the omitted act (appeal fee) is considered paid with a debit order but on p.7, after the RE is refused for lack of due care, the debit order for the appeal fee is not to be carried out. 

EPO T 1954/13 -  link

Appeal not deemed filed and refund of the appeal fee

39. In the present case, the notice of appeal and the appeal fee were received outside the two-month time limit pursuant to Article 108, first sentence, EPC, together with the request for re-establishment of rights.

40. The board is aware of different approaches in the case law of the boards of appeal in situations where either or both the requirements of Article 108, first and second sentence, EPC (i.e. the filing of the notice of appeal and the payment of the appeal fee) have been fulfilled only after expiry of the two-month time limit: In a series of decisions the appeal was considered as deemed not filed and the appeal fee was reimbursed (for the cases that (1) the notice of appeal was filed in due time but (a) no appeal fee was paid - J 2/78 or (b) the appeal fee was paid late - J 24/87, J 16/82, T 105/85; (2) the appeal fee was paid in due time and the notice of appeal was filed late - J 19/90, T 445/98; (3) both, the notice of appeal and the appeal fee were late - J 21/80, OJ EPO 1981, 101, official text in French). In other series, the appeal was rejected as inadmissible in situations mentioned before, either (1) with an order to reimburse the appeal fee (see e.g. T 489/93) or (2) without such order (see e.g. T 122/02 for late appeal fee payment; T 1100/97 and T 2450/16 for late notice of appeal; T 1289/10 and T 2210/10 for both requirements fulfilled late).

41. This board comes to the conclusion that the order in the circumstances of the present case should be that the appeal is deemed not to have been filed and that the appeal fee is to be reimbursed.

42. Firstly, the appeal is deemed not filed in the present case because no notice of appeal had been filed within the two-month time limit, and the appeal fee had not been paid within that time limit either. The board's construction, that in order for the appeal to be deemed filed not only the notice of appeal must be filed but also the appeal fee must be paid within the two-month time limit of Article 108, first sentence, EPC, is based on the consideration that sentences 1 and 2 of Article 108 EPC are to be read together (see also J 16/82, OJ EPO 1983, 262, Reasons, point 9; T 778/00, OJ EPO 2001, 554, Reasons, point 2.2). The link between the two sentences can be seen more clearly on the basis of the wording of the second sentence in its EPC 1973 version ("The notice shall not be deemed to have been filed until after the fee for appeal has been paid", emphasis added by the board), and there is no indication in the travaux préparatoires to the Act revising the EPC in 2000 that the legislator, except for moving formal requirements to the Implementing Regulations, intended to change Article 108 EPC in substance (see MR/2/00, Art. 108; MR/24/00, point 257). Accordingly, the board interprets Article 108, second sentence, EPC as meaning that payment of the appeal fee within the two-month time limit is a further precondition for an appeal being formed.

This is in line with the general concept of the EPC that a request is only deemed filed (e.g. requests for examination, re-establishment of rights, limitation/revocation, opposition or review) if payment is made in due time. Furthermore, the subsequent filing of the notice of appeal - here in the context of the (unsuccessful) request for re-establishment of rights - can, due to the expiry of the two-month time limit pursuant to Article 108, first sentence, EPC, no longer result in a valid forming of the appeal (see also T 1325/15, Reasons, point 41).

43. Secondly, the board considers that the finding that the appeal is deemed not to have been filed should lead to a corresponding order. This is a long-standing practice of the boards (see case law cited in point 40), and the board sees no compelling reason for adopting a different approach. The legal basis for such an order can be seen in Article 108 EPC itself, from which the legal consequence is derivable.

In the board's opinion, Rule 101(1) EPC is not in conflict with this approach. This provision stipulates that if the appeal does not comply with Article 108 EPC, inter alia, the board must reject it as inadmissible unless any deficiency has been remedied before the relevant period under Article 108 EPC has expired. The board notes, firstly, that the provision refers to "the appeal" which, according to the board's construction, presupposes that an appeal has already come into existence and, secondly, that the explicit reference in Rule 101(1) EPC to Article 108 EPC is not completely redundant as there is scope of application, at least in relation to the statement of grounds of appeal, in case of an appeal having actually been formed.

44. Finally, because the request for re-establishment of rights is rejected and the appeal is deemed not to have been filed, the appeal fee has not fallen due pursuant to Article 4(1) RFees. Thus, the appeal fee was paid without a legal basis and must therefore be reimbursed (see also J 21/80, supra; T 1026/06, Reasons, point 6; T 585/08, Reasons, point 24).

Order

For these reasons it is decided that:

1. The request for re-establishment of rights in respect of the two-month time limit under Article 108, first sentence, EPC is rejected.

2. The appeal is deemed not to have been filed.

3. The appeal fee is to be reimbursed.